Chapter 2 Novelty and Inventive Step - Japan Patent Office

Part II Chapter 2 Novelty and Inventive Step
(3) Instead of the approaches in said (1) and 1.5.3(3), matters in cited publications and
matters used to specify the inventions in the claimed inventions are compared to define the
corresponding and differing points by interpreting these matters based on the common general
knowledge as of the filing. However, the results after this comparison should not differ from those
from the approaches in said (1) and 1.5.3(3).
(4) Combinations of two or more independent cited inventions should not be compared to
the claimed inventions.
1.5.5 Determining the Novelty of the Claimed Inventions
(1) When the difference between the matters used to specify the invention in the claimed
inventions themselves and those used to specify the cited inventions is not found after the
comparison, the claimed inventions are not novel. Any difference between these two matters
involves the novelty of the claimed inventions.
(2) The claimed inventions with formal or substantial alternatives Note 1 for defining an
invention for which a patent is sought are not considered to be novel when any difference
between the claimed inventions, in which one of the alternatives is presumed to be an aspect to
define the invention, and the cited inventions is not found Note 2 .
Note 1: The term "formal alternatives" means descriptions in a style that makes it apparent that
the claims are alternatives, such as claims described in the Markush form or multiple dependent
form claims citing other claims alternatively.
The term "substantial alternatives" means descriptions provided to substantially include
more specific aspects of a limited number of arts using comprehensive expressions. The
"substantial alternatives" are determined by the claims as well as specifications, drawings, and
the common general knowledge as of the filing, such as claims providing the description "alkyl
groups with C1 – C10 (the number of carbons)," which is a comprehensive description including
methyl groups, ethyl groups, and other groups.
On the other hand, the term "thermoplastic resin," for example, is not a comprehensive
expression that covers specific concepts of the "thermoplastic resin" unless it should be
interpreted exactly based on the specifications, drawings, and common general knowledge as of
the filing, such as definitions described in the detailed description of the invention, and it should
be noted that this term is not included in the substantial alternatives. Accordingly, the concept
"thermoplastic resin" includes an unspecific number of specific concepts, such as polyethylene or
polypropylene, and it is understood to be a generic concept specified by the characteristic shared
by the specific concepts, such as "thermoplasticity" for the "thermoplastic resin."
Note 2: This approach does not relate to the timing when prior art searches are finished. For
details, see "Part IX How to Proceed the Examinations."
(3) Claims defining products by functions or characteristics
I. Claims providing descriptions for defining products by functions or characteristics, which
are included in the following (i) or (ii), may be difficult to compare to the cited inventions. For
these claims, the examiners shall send a notice of the reasons for refusal for the lack of novelty
when they have a reasonable doubt that the products in the claimed inventions and cited
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